managing partner ip protection in thailand nettaya warncke 1

Managing Partner

IP Protection in Thailand

Nettaya Warncke

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- Not widely known or used in Thailand

- Not previously disclosed or published anywhere in the world

- Not similar to any of the above

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Patent Registration

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Published in Magazine

Patent Act Section 85

“Any person who does anything under Section 36 or Section 63 without the permission of the patentee shall be liable to imprisonment for not more than two years or a fine not exceeding four hundred thousand baht or both” .

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Supreme Court Decision 1822/2543 confirms that imitation is also a patent infringement

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Patent Act Section 64

“Any patent issued contrary to the provisions of Section 56 or 58 or Section 65 in conjunction with Sections 10, 11 and 14 is invalid. The invalidity of a patent under paragraph one may be raised by any person. A petition to cancel an invalid patent may be submitted to the court by an interested person or by the public prosecutor”.

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Supreme Court Decision 2670/2532

The plaintiff who has not manufactured theproducts is not an aggrieved party.

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Priority Claim: Six Months

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TRADEMARKS ACT B.E. 2534 (1991) “Section 4. In this Act:-“mark” means a photograph, drawing, device, brand, name, word, letter, numeral, signature, or any one or combination thereof but not including industrial designs under the law on patents ; “

[ Old Law ]

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TRADEMARKS ACT B.E. 2534 (1991)as amended by

TRADEMARKS ACT (NO.2) B.E. 2543 (2000)

PRESENT LAW

“Section 4. “mark” means a photograph, drawing, device, brand, name, word, phrase, letter, numeral, signature, combination of colors, figurative element or combination thereof; ”

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“Section 18 The applicant shall be entitled to appeal orders of the Registrar under Sections 14, 15, 16 and 17 to the Trademark Board within ninety days from receipt thereof. Decisions of the Trademark Board shall be final.”

“Decisions of the Trademark Board can be final when they are in accordance with the law. For decisions not in accordance with the law, the appellants can bring them to the IP Court for examination and review”.

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Supreme Court Decisions Nos. 7024/2549 and 630/2551

“When the bottles can identify the source of origin and can tell consumers that the goods are different from others’ goods, they are distinctive trademarks and the 2 bottles of this case meet those criteria, they are therefore distinctive and registrable as trademarks, they are not common or descriptive elements as raised by both the examiner and the Trademark Board to reject the said bottles”

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25 Rejected 3D Marks

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- National Flag, Emblem- Red Cross- Certification Medal/Emblem- Immoral Word/Device

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Absolutely Not Registrable

- Descriptive Words- Personal Name, Surname not in special style- Full Company name not in special style- Geographical Name

Not Inherently Registrable

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THE THE CRIMINALCRIMINAL CODECODE

SECTION 273: "Whoever counterfeit another SECTION 273: "Whoever counterfeit another person's registered trademark, whether it be person's registered trademark, whether it be registered within or outside the Kingdom, shall registered within or outside the Kingdom, shall be punished with imprisonment not exceeding be punished with imprisonment not exceeding three years or fine not exceeding six thousand three years or fine not exceeding six thousand baht, or both".baht, or both".

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THE CRIMINAL CODE

SECTION 274: "Whoever imitates another person's registered trademark, whether it be registered within or outside the Kingdom, in order to mislead the public into believing that it is the trademark of such other person, shall be punished with imprisonment not exceeding one year or fine not exceeding two thousand baht, or both."

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TRADEMARKS ACT B.E. 2534 (1991)TRADEMARKS ACT B.E. 2534 (1991)as amended by as amended by

TRADEMARKS ACT (NO.2) B.E. 2543 (2000)TRADEMARKS ACT (NO.2) B.E. 2543 (2000)

Section 46Section 46. No person shall be entitled to bring legal . No person shall be entitled to bring legal proceedings to prevent or to recover damages for the proceedings to prevent or to recover damages for the infringement of an unregistered trademark. infringement of an unregistered trademark.

The provisions of this Section shall not affect the right of the The provisions of this Section shall not affect the right of the proprietor of an unregistered trademark to bring legal proprietor of an unregistered trademark to bring legal proceedings against any person for passing off goods as proceedings against any person for passing off goods as those of the proprietor of the trademark.those of the proprietor of the trademark.

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SAINT

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- Multi-Class Application Possible- 180 Days Renewal Grace Period- Reduction of time to Respond- Increase in Official Fee- 5 Year Prescribed Period Not Applicable to Trademark Misappropriation

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